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© 2015 Fox Rothschild
Inter Partes Review Lessons Learned
Scott R. Bialecki
Fox Rothschild LLP
June 24, 2015
The 10,000 Foot View
• Inter Partes Review (“IPR”) is a relatively new procedure under the AIA for challenging patent validity at the USPTO.
• Considered to be faster and have a better success rate than previous options.
• Only based on prior art patents or printed publications.
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Inter PartesReview District Court
Decided By PTAB panel Judge/Jury
Timing 1.5 years 1.5 – 4 years
Burden of Proof
Preponderance of the evidence
Clear and convincing evidence
Claim Construction
Standard
Broadestreasonable
interpretation
Construe to maintain validity
IPR vs. District Court
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Inter Partes Review Ex Parte Reexam
Decided By PTAB Panel Patent Examiner
Timing 1.5 years3 mos. to institute/No final deadline
Basis for Instituting
Reasonable likelihood of success for at least 1
claim
Substantial new question of patentability
EstoppelRaised or could
reasonably have been raised
None
ParticipationThroughout process/ right to appeal final
decision
Limited to initial filing/no right to appeal final decision
BasisPatents & printed
publicationsSame
IPR vs. Ex Parte Reexam
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3 months
3 months
7 months
No more than 12 months*
*Possible 6-month extension
No more than 6 months
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Timing
WHEN:
IF IN LITIGATION, YOU MUST FILE IPR PETITION WITHIN 1 YEAR OF COMPLAINT.
Follow the Five Month Rule.
PTAB makes institution decisions within 6 months.
Five Month Rule leaves a 1 month turnaround.
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Fees Can Add Up Quickly
Petition $9,000 + $200 for each claim over 20.(Non-refundable if petition denied)
$14,000 + $400 for each claim over 15.(Refundable if petition is denied)
Min USPTO Filing Fee = $23,000
Institution
+
Attorneys’ Fees
+
617 Petitions Filed (as of 1/15/15)9,048 Claims Challenged
68% of Claims Challenged Were Instituted
32% of Claims Challenged Were Not Instituted
Source: USPTO IPR Statistics (as of 1/15/15)
51% of Claims Instituted Did Not Survive IPR
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What We’ve Learned: Estoppel
Q: What counts as “could have raised”?
A: This includes “prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover.”
IPR2015-00549, Dkt. 10, at 5.
Concept: Estoppel applies only for grounds that petitioner raised or reasonably could have raised.
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Practice Pointer:Estoppel
• Star Envirotech, Inc. v. Redline Detection, LLC, Case No. SACV 12-01861 JGB (DFMx) (C.D.Cal. 1/29/15)– Instruction manual case– LeakMaster A240 smoke machine
• “locating a heating element within a closed smoke producing chamber”
• TIP: Make sure to analyze manuals relating to devices to avoid estoppel issue
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What We’ve Learned: Estoppel Cont’d
Q: What counts as a “final written decision”?
A: This does not include denial of a petition for institution. It only applies to the PTAB’s decisions after institution.
35 U.S.C. §§ 315(e)(2) and 318(a)
Concept: Estoppel applies only if there was a final written decision.
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What We’ve Learned: Incorporation By Reference
“The footnotes cite a total of seventeen pages, including eleven pages of claim charts, of Dr. Roy’s Declaration—substantially more pages than section VII-A in the Petition. . . . The practice, here, of using footnotes to cite large portions of another document, without sufficient explanation of those portions, amounts to [an improper] incorporation by reference.”
IPR2014-00454, Dkt. 12, at 7-8.
Concept: The PTAB follows a strict 60-page, double-space, 14 pt. font rule. Petitioners who try to skirt this rule by incorporating exhibits by reference risk getting their petitions bounced.
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What We’ve Learned: Staying District Court Litigation
Q: What are ways to increase chances of a stay?
A: You have a better chance of a stay if:• You ask for it after the IPR is instituted;• All patents, claims, and parties are involved in the
IPR; and/or• You can show minimal prejudice to opposing side.
Concept: Staying District Court litigation is not guaranteed, so proceed with caution.
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4 Revised IPR RulesEffective May 19, 2015
• Page Limits in Patent Owner’s Motion to Amend– 25 pages (up from 15) / Opposition has same 25 page limit– Proposed amended claims can be presented in appendix
• Petitioner Reply Brief Page Limit– 25 Pages (up from 15)
• Easier now to respond to Patent Owner Response brief of 60 pages
• Required Font– Font games are over: 14-point, Times New Roman
• Multiple Back-Up Counsel Allowed
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The Fight Against Hedge Funds
• Abuse of IPR Process– Motion for Sanctions briefing moving forward
• Bass and related companies “abusing IPR process for private financial gain”; 37 C.F.R.§§ 42.12(a)(6), b(8)
• Celgene Corp., IPR2015-01102 (Jun. 9, 2015)
• Fail to Disclose All Investors: Real Parties-In-Interest– Motion for Additional RPI Discovery
• NPS Pharmaceuticals Inc., IPR2015-00990 (Jun. 3, 2015)
– Preliminary Response Arguing Failure to Disclose RPIs
• Acorda Therapeutics, IPR2015-00720 (May 26, 2015)
